The question, as one might expect on this blog, is who owns the trademark? The first narrator of the video is registrant Diana Van Straten, who obtained a registration on the Supplemental Register for WORLD CHAMPIONSHIP CABBAGE CHUCK for “charitable fund raising by means of an entertainment event where competitors throw cabbages.” The other claimant is St. Denis Parish, which filed a petition to cancel Ms. Van Straten’s registration.

Registrant’s specimen

In its petition, St. Denis Parish pleaded fraud on the PTO, that there was likelihood of confusion, and nonuse on the part of Van Straten. The TTAB interpreted this last claim as a claim of lack of ownership on the basis of nonuse, which was the theory upon which it decided the case.

Van Straten thought up the idea of a cabbage-throwing contest as a fundraiser for her church, but that’s about all the evidence she could muster to back up her claim of ownership. Rather, the evidence showed that the parish:

adopted the mark WORLD CHAMPIONSHIP CABBAGE CHUCK for its annual charitable fund raiser in 2006. Petitioner has been using the mark continuously since then, and has held annual fundraisers in 2006, 2007, 2008, 2009, and 2010 using the mark. There is no question that petitioner is the party responsible for all aspects of the annual WORLD CHAMPIONSHIP CABBAGE CHUCK, held in Shiocton, Wisconsin from 2006 continuously through 2010. Petitioner’s witnesses testified, with exhibits, that although numerous volunteers (such as respondent, on several occasions) participated, petitioner was the party responsible for paying for costs associated with each such event. All of the advertisements tout respondent, “St. Denis Parish,” as the host of the event. Ms. Tews [the parish business manager] has also sent out, on behalf of petitioner, letters thanking people for their participation, after each event, and begun preparations for the following year.

So Van Straten wasn’t the owner of the mark used for the church-sponsored event. She had also never put on a different cabbage tossing event and her specimen of use was for the parish’s cabbage chucking contest, not any separate event she had sponsored. Thus, since Van Straten had never rendered the services described in her application, under In re Wella, A.G., 858 F.2d 725, 8 U.S.P.Q.2d (BNA) 1365, 1368 (Fed. Cir. 1988), she was not the owner of the mark. Registration cancelled.

For those of you who haven’t been able to concentrate on the post because the little voice inside your head has been saying “but it’s cabbage CHUNKING,” you have my sympathy. It’s been hell trying to type “chuck” instead of “chunk” each time. But there is an explanation:

In the midst of these meetings, actually, I made a mistake, and I called it cabbage chuckin. And I did that a couple of times, and members of the committee were correcting me, it’s not chuckin, it’s chunkin. Somebody said, well, why don’t we call it chucking, because we are throwing, chucking cabbages. That’s how I remember it evolving into cabbage chucking.

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Ms. Chestek is admitted to practice in Connecticut, the District of Columbia, Massachusetts, New York and North Carolina and is Board Certified by the North Carolina State Bar's Board of Legal Specialization in Trademark Law.

Attorney Advertising. Prior results do not guarantee a similar outcome.